WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Old Mutual Life Assurance Company (South Africa) Limited, Old Mutual PLC, Old Mutual Investment Advisers, Inc., Old Mutual Life Assurance Company Zimbabwe Limited, South African Mutual Life Assurance Society, Old Mutual Life Assurance Company Kenya, Old Mutual Swaziland (Proprietary) Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Wesley Coleh

Case No. D2018-2480

1. The Parties

The Complainants are Old Mutual Life Assurance Company (South Africa) Limited of Pinelands, Cape Town, South Africa, Old Mutual PLC of London, United Kingdom of Great Britain and Northern Ireland, Old Mutual Investment Advisers, Inc. of Boston, Massachusetts, United States of America (“United States), Old Mutual Life Assurance Company Zimbabwe Limited of Emerald Hill, Harare, Zimbabwe, South African Mutual Life Assurance Society of Pinelands, Cape Town, South Africa, Old Mutual Life Assurance Company Kenya of Upper Hill, Nairobi, Kenya and Old Mutual Swaziland (Proprietary) Limited of Mbabane, Swaziland, represented by Spoor & Fisher Attorneys, South Africa.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Wesley Coleh of Austin, Texas, United States.

2. The Domain Name and Registrar

The disputed domain name <oldmutuall.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2018. On October 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 31, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on November 1, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on November 2, 2018.

The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2018.

The Center appointed Nicholas Smith as the sole panelist in this matter on December 4, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainants are related entities that form part of the Old Mutual group of companies that provide investment, savings, insurance and baking services various locations around the world. The Complainants collectively have more than 18.9 million customers and over 168 billion GBP of assets under management.

The Complainants individually own various trade marks around the world consisting of the words “old mutual” (the “OLD MUTUAL Mark”) including owning trade mark registration No. 2,051,432 for the OLD MUTUAL Mark in the United States, the location of the Respondent, filed on June 6, 1995, and registered for various financial services in class 36.

The Domain Name <oldmutuall.com> was registered on February 8, 2018. It is presently inactive, however prior to the commencement of this proceeding it resolved to a website (“Respondent’s Website”) that purported to be the official website of an entity known as “Old Mutual Kenya”, said to be part of the Old Mutual Group. Specific reference was made to Complainant Old Mutual PLC. The Old Mutual Kenya entity has no connection with the Complainants. The Respondent’s Website invited interested investors and potential customers to contact it by email or by a form on the website.

5. Parties’ Contentions

A. Complainant

The Complainants make the following contentions:

(i) that the Domain Name is identical to the Complainants’ OLD MUTUAL Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainants are the owner of the OLD MUTUAL Mark, having registered the OLD MUTUAL Mark in various countries around the world including the United States. The Domain Name is a misspelling of the OLD MUTUAL Mark, since it merely adds an additional “l” after “mutual”. This amounts to typosquatting.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name. The Respondent has used the Domain Name for a website that passes itself off as the Complainants’ and purports to offer various banking services in direct competition with the Complainants. Such use does not amount to a bona fide offering of goods or services or a legitimate non-commercial use. The Respondent’s Website copies logos and text from various websites operated by the Complainants.

The Domain Name was registered and is being used in bad faith. By using the Domain Name for a website that reproduces logos and material from other websites operated by the Complainants and assert that the Respondent is an associated entity of the Complainant, the Respondent is intentionally attempting to attract for commercial gain, internet users to the Respondent’s Website by creating a likelihood of confusion with the Complainants’ OLD MUTUAL Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s Website. Such conduct amounts to registration and use of the Domain Names in bad faith.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

A. Consolidation of Multiple Complainants

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides at section 4.11.1, in respect of the issue “Multiple complainants filing against a single respondent” that:

“Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.

In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.”

The present proceeding involves seven Complainants bringing a single complaint against a common Respondent. The Complaint makes a request for consolidation and bears the onus of establishing that such a consolidation is justified.

The Panel is satisfied, based on the material filed, that the Complainants have a specific common grievance against the Respondent, in that the Complainants have a common legal interest as members of the same corporate group that hold the OLD MUTUAL Mark in various jurisdictions.

The Panel has considered whether it would be equitable and procedurally efficient to permit the consolidation. In the present case it is no doubt procedurally efficient.

The Panel finds that it is equitable to grant the Complainants’ request for consolidation.

B. Identical or Confusingly Similar

To prove this element the Complainants must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainants’ trade or service mark.

The Complainants own the OLD MUTUAL Mark, having registrations for the OLD MUTUAL Mark as a trade mark in various jurisdictions including the United States.

Discounting the generic Top-Level Domain “.com”, the Domain Name consists of the OLD MUTUAL Mark and the additional letter “l”. The addition of the letter “l” does not prevent a finding of confusing similarity as it merely creates a common or obvious misspelling of the OLD MUTUAL Mark, often referred to as typosquatting. The Panel finds that the Domain Name is confusingly similar to the Complainants’ OLD MUTUAL Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

C. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent is not affiliated with the Complainants in any way. It has not been authorized by the Complainants to register or use the Domain Name or to seek the registration of any domain name incorporating the OLD MUTUAL Mark or a mark similar to the OLD MUTUAL Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate non-commercial use.

The Respondent has used the Domain Name to operate a website that contains material and marks that have been copied from websites operated by the Complainants and hence uses the OLD MUTUAL Mark to offer services that purport to be services offered by the Complainants. Given the lack of any connection between the Complainants and the Respondent, and the dishonest manner in which the Respondent’s Website impersonates the Complainants’ websites, the Respondent’s use of the Domain Name does not grant it rights or legitimate interests since it is using the Complainants’ OLD MUTUAL Mark for offering services in direct competition with the Complainants.

The Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainants who are the owner of the trade mark or service mark or to a competitor of the Complainants, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b)).

The Panel finds that it is likely that the Respondent was aware of the Complainants and their reputation in the OLD MUTUAL Mark at the time the Domain Name was registered. The Domain Name resolved to a website with material copied from the websites operated by the Complainants and offering services in competition with the Complainants, indicating that the Respondent was aware of the Complainants and was actively impersonating the Complainants.

In these circumstances, the Respondent’s conduct in registering the Domain Name when it was aware of the Complainants’ rights and lacked rights or legitimate interests of its own amounts to registration in bad faith.

The Respondent registered the Domain Name for the purposes of operating a website that asserted that it was an entity connected with the Complainants for the purposes of selling banking services in direct competition with the Complainants. The Respondent is using the Domain Name that is confusingly similar to the OLD MUTUAL Mark to sell services in competition with the Complainants and without the Complainants’ approval. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants and the Complainants’ OLD MUTUAL Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website.

Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <oldmutuall.com> be transferred to Complainant Old Mutual Life Assurance Company (South Africa) Limited.

Nicholas Smith
Sole Panelist
Date: December 7, 2018